Transcript Working Successfully with the EPO

Practical tips and Strategies
for US applicants before EPO
Alfred Spigarelli
Director Patent Procedures Management
June 2015
What is a global patenting hub?
 International goods and data exchanges require global IP strategies
 PCT is more and more recognized as the most effective route to global
patenting
 Choice of the International Searching Authority is key
 Since the widening of PPH agreements, in particular IP5 PPH, choice of the
ISA and outcome of the international procedure will determine the cost of
getting global patenting
 More than the office of first filing the ISA is the global patenting hub
Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office
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How to choose the global patenting hub?
 2 options are possible:
 Buying time: reduce the cost of the PCT procedure and postpone
choices an decisions
 Maximising legal certainty and overall savings: quality and users
support of the ISA decisive for the ISA effectiveness as spring board
for future extensions
 If global patent protection matters, then:
 quality, reliabilty and users support will ultimatey provide true savings
 even when time is not an issue, procedural efficiency is the best
option
Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office
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Opting for EPO as global patenting hub
 What can EPO offer for supporting global patenting strategies?
 High quality and timely International search report and opinion (or IPER)
 PCT reports fully recognized when entering in the regional phase at EPO
 According to users EPO ISR and WOISA are in practice extensively reused
by designated or elected offices all over the world
 Reliable, users friendly and supportive procedures thank to team work
(positive WO reviewed by at least 1 extra examiner), quality management
system (incl. efficient complaints handling), timely delivery (ECfS), …
 Why is EPO a cost effective choice?
 EPO works will be recognized for the Euro-PCT phase with fee refund
 Users supported all along the procedure for getting a positive written
opinion or exmanation report well in time for fine tuning strategy
 PPH based on EPO work is a powerful match for getting swift
exmanation and saving costs at latter stages
Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office
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PCT route with EPO ISA/IPEA
0 m.
1st filing at
USPTO
12 m.
PCT 2nd
filing RO US
<17 m.
Inter. Search
at EPO
WOISA
+
27 m.
•
•
•
•
•
no
•
•
•
•
•
Inter.
Preliminary
exam. at EPO
1 WO + phone call
N.U. see Chap I
IPER 1st com at EPO
Fee refund in Euro-PCT
Very high probability
IPER +
yes
•
30 m.
31 m. at
EPO
Invitation to clarify
N.U. PCT standard
Reliable NU protest review
WOISA 1st com at EPO
Fee refund in Euro-PCT
National/regional
phase
National/regional
phase
Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office
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•
PPH request based on
EPO WOISA or IPER
Free acceleration
Quicker grant with less
com.
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Filing and proscution strategy with PCT Direct
 1st filing searched by EPO:
National application searched by EPO
EP 1st filing
PCT 1st filing with ISA EPO
 PCT claiming prio from 1st filing searched by EPO
ISA EPO
Since 1/11/2014 EPO ISA
Soon any RO (incl. RO USPTO)
 WO ISA positive (if needed demand Chap II)
 Entry into national/regional phase with PPH based on EPO report
 Grant at EPO 6 months after entry (ca. 37 m. after 1st filing at max)
 Only one search fee and one exam fee (even with Chap II)
 Less communications and faster grant (incl. at USPTO DO or EO)
 Procedural fees at EPO offset by savings at EPO and beyond
Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office
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Invitation to clarify the subject matter
to be searched (Rule 62a and 63 EPC)
 Under the EPC:
• In case of major lack of clarity or excessive number of
independent claims: Applicants invited to clarify the subject
matter which he wants to get searched
• Extent of search depends on applicant’s reply
• No incomplete search or declaration of no search without
invitation to clarify
Under the PCT:
• Same principle as for EPC
• However invitation to clarify encouraged but not mandatory!
Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office
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Reply to search opinion
 For EP applications (Rule 70a EPC):
• When requesting examination (within 6 months after search
report published) a reply to a negative search opinion is
due
• Amendments not mandatory but filed in most cases
 For PCT applications with EPO/ISA entering in EP phase
(Rule 161(1) EPC):
• Reply to WOISA requested within 6 months after
communication if no amendment filed at entry.
 At PCT Chap II start:
• When demanding IPE under Chap. II reply to WOISA is
expected. If not filed IPER issued without preliminary WO.
• May become world standard (PCT working group)
 Resulted in a significant increase of direct grant at EPO
• Efficient for applicants and EPO
Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office
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Filing amendments in exmanation at EPO
 When filing amendments:
Amendments must be typed
 no clean copy required,
 file only amended pages or paragraphes) R. 49(8) EPC
 Amendments should be identified R. 137(4) -> include in reply
 typed copies with track changes or
 working copies
 Indicate the basis in the originally filed application for the amendment
 Best practice for self check
 Steer examination of extended subject matter
 Apply also to PCT
Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office
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Need more information?
 Visit www.epo.org
 Follow us on
www.facebook.com/europeanpatentoffice
twitter.com/EPOorg
www.youtube.com/EPOfilms
www.linkedin.com/company/european-patent-office
 Contact us via www.epo.org/contact
or email to [email protected]
Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office
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Thank you for your attention
Alfred SPIGARELLI, Director Patent Procedures Management, European Patent Office
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